Is your brand name capable of trade mark protection?

A company’s brand is often its most valuable asset, driving real commercial value. Investing in intellectual property is sometimes seen as an unnecessary expense, however, more and more businesses are now investing in IP protection at an early stage, in order to build strong portfolios. IP plays a crucial role in business acquisitions and, according to the World Intellectual Property Organisation (WIPO), makes up around 80% of a company’s worth. As if to highlight the point, in January, NatWest launched a new lending proposition, enabling high growth SMEs to leverage the value of their intellectual property to secure growth funding.

Deciding on a brand name isn’t easy, and it’s important that your chosen brand can be legally protected. We would always advise applying to register your trade mark at the earliest opportunity; if your application faces opposition by a third party, you could be forced to rebrand which becomes more expensive the further down the line you get, particularly if you have already launched your product or service to the public. Branding considerations should include:

 

Is your trade mark distinctive?

The more imaginative and distinctive your mark is, the greater the chance of achieving registration. The Intellectual Property Office will examine a trade mark application and check that the trade mark is distinctive (in other words, that the mark is not descriptive of the goods and services for which it has been applied or is a customary term in the relevant line of trade).

 

Word or logo?

Generally speaking, a registered word mark offers wider protection, but if your brand has any sort of distinctive or interesting design element to it and relies heavily on a unique visual representation, then it is worth registering your logo as well as the word. In addition, if a word mark is descriptive of the goods or services being provided and therefore unregistrable, accompanying that word with a distinctive logo can provide an alternative means to registration. Bear in mind, however, that the word will only be protected when accompanied by the logo.

 

Review the market

It’s important that your chosen brand does not infringe a third party’s rights, so carrying out clearance searches before launching a brand is vital. Early searches can save you wasted time and cost if the brand you have decided upon is unavailable. Even if a full comprehensive search is beyond your budget, a basic search can help you choose a brand that is distinct from competitors operating in your market, to help avoid disputes and improve chances of registration. Similar work will need to be carried out in any other countries in which you intend to operate.

 

The application process

It’s crucial that you classify the goods and services for which you intend using your mark properly and in accordance with the Nice Classification system (an international system used to categorise goods and services). If you have not used your mark for those goods and services in the five years following registration, your mark can become vulnerable to revocation, so deciding on a suitable specification is key.

 

Brand monitoring after registering your trade mark

Once you have secured a registered trade mark, it’s important to monitor the marketplace, to prevent dilution and loss of trade mark rights. A trade mark watch will ensure the early detection of potentially conflicting trade mark applications, affording you the opportunity to oppose those applications that may otherwise go unnoticed and undermine your registered rights. It is also possible to set up a brand monitor that will search social media, web content and marketplaces for unauthorised use of your brand.

 

Our team can help

If you are considering a new brand and embarking on the trade mark registration process, our commercial & technology team can assist you to conduct clearance searches and navigate the nuances of the application process. Contact our team today at [email protected].